Patents can be used to protect more than just technical inventions—which generally take years of research and involve significant costs. New (product) designs can also be protected by law by design rights. They have to be registered with the relevant Office and extended in due course. This is how graphic designers, fashion designers, product designers and industrial designers protect their designs from being copied by third parties.
What are design rights?
Designs are made up of lines, forms, contours, colors, materials, shapes and textures. You can use design rights to legally protect these product or design features, e.g., as part of product or fashion designs.
Design rights offer a maximum protection term of 25 years from the filing date. However, this has to be extended in separate applications every five years. During this time, our clients hold the exclusive right to use any products protected by these design rights. This includes the manufacture, sale, import & export and use of any products that use this design. Third parties may only use these protected design rights, including any related products, with legally valid consent.
Design rights: What can be protected?
Protected items include three-dimensional products such as cars and furniture, as well as two-dimensional items such as fonts, graphics and fabrics. Novelty and individual character are relevant in applications for design protection.
Designs will only be considered for protection if they are new. However, a grace period of up to twelve months applies, which means that any design published by the designer no more than 12 months before the application will still be considered. What’s more, they must be different from any existing designs and present a certain individual character.
Where does design protection apply?
As a general rule, a design right only provides protection in the country in which it is registered. In Germany, applications are filed with the German Patent and Trade Mark Office (DPMA) in Munich.
If you need cross-border protection, e.g., for international sales or global import/export, then you will have to apply for further protective rights. You can apply to the European Union Intellectual Property Office (EUIPO) for protection across the entire European Union, or to the World Intellectual Property Organization (WIPO) for countries outside of the EU. National design rights applications can also be filed directly with countries outside of Germany.
Who can apply for a design right?
In principle, anyone with a design worthy of protection can apply for a design right and protect their designs from being illegally copied by third parties. At RGTH, our patent attorneys support clients in applying for design rights in Germany and abroad, and provide expert advice on the best strategies to use in design protection. We also defend their designs in the event of any infringement and administer any licenses issued to third parties.
Differences between patents and design rights
The terms ‘patent’ and ‘design right’ are often confused, despite not being synonyms.
While design rights protect the appearance/particular design of a product, patents provide legal protection for inventions, including technology and work processes.
Our experienced patent attorneys know their way around both patents and design rights, so we can provide clients with expert advice.
Differences between design rights and utility models
Utility models are ‘cut-down’ versions of patents and, like patents, can be registered for technical inventions. However, protection provided by utility models is limited to 10 years.
By contrast, design rights protect almost all industrially manufactured products or handicraft products. They can only be used by third parties with legal consent and protect products for 25 years.
Types of design rights
In addition to the German and international design rights explained above, there are also Community design rights which can be further divided into registered and unregistered Community design rights.
Community design rights
If a design needs more than just national protection, you can register a Community design right which is valid throughout the European Union. Community design rights can be divided into registered and unregistered Community design rights.
Applications are filed with the European Union Intellectual Property Office (EUIPO) or the German Patent and Trade Mark Office (DPMA).
Unregistered Community design rights
In contrast to registered Community design rights, unregistered Community design rights only protect designs for three years. Holders of unregistered Community design rights can only protect their designs from imitation by third parties.
Clients must reveal the design to experts and industry professionals within the European Union, e.g., at a relevant trade fair, or register the design as a national design right to benefit from this EU-wide right.
International design rights from the World Intellectual Property Organization (WIPO)
It may be appropriate for our patent attorneys at RGTH to apply to WIPO for design rights if a client is interested in protecting their design(s) beyond the EU, i.e. worldwide. In this case ‘worldwide’ means a maximum of 67 countries as international design protection can only be obtained from the individual contracting parties to the Hague System; our patent attorneys will ask you to select which countries you would like protection in during the application process.
You can still apply for national design rights in other countries. We also support our clients in this process by helping them select which countries they should apply to for design protection.
Applying for design rights
Our experienced RGTH patent attorneys always view the client’s design before filing an application for design protection as this allows them to advise clients on the most appropriate way to register their design. We then file the application at the national or even international level with the DPMA, EUIPO or WIPO. Applications can consist of either a single or multiple designs.
Multiple design rights
Submitting one application for multiple designs reduces costs for our clients in comparison to submitting individual applications for each design. This is because the fees charged by the DPMA and EUIPO are lower when several designs are combined into one application. All designs in a multiple application must belong to the same product category, i.e. designs from different categories cannot be combined solely to benefit from the advantages of multiple applications.
What are the costs involved in filing a design right application?
Various costs apply depending on what design protection is suitable for our clients’ type of design. Filing and maintenance fees for design rights are typically lower than those of patents. National design rights have the lowest fees, followed by EU and international design rights.
Aside from filing fees, additional fees are also charged for publication, and renewal fees are charged to extend protection by five years at a time. Fees are also charged by our experienced patent attorneys for drafting the application and filing it with the relevant Office.
Our design rights services
- German, EU and international design registration (design rights) plus national design registration in countries outside the European Union
- Design searches for relevant designs in the pool of existing designs
- Conducting infringement processes regarding design rights and design-related disputes under competition law such as protection against imitation, get-up, slavish imitation
- Strategies for registering and protecting designs
- Conducting invalidity proceedings against design rights of third parties before the DPMA and EUIPO